Trials@uspto.gov
`571-272-7822
`
`Paper 21
`
`Entered: May 24, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`Before BRIAN J. MCNAMARA, JOHN F. HORVATH and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`
`
`
`POWER INTEGRATIONS, INC.,
`Petitioner,
`
`v.
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,
`Patent Owner.
`______________________
`
`Case IPR2017-01328
`Patent 6,845,019 B2
`__________________________________
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`

`

`IPR2017-01328
`Patent 6,845,019 B2
`
`
`In its proceeding, Petitioner challenged claims 1–15 of the ’019 patent
`as anticipated under 35 U.S.C. § 102(b) by Bonte et al., U.S. Patent No.
`5,305,192 (“Bonte”) (Ex. 1002). Pet. 3. We determined in our Decision on
`Institution that Petitioner had demonstrated a reasonable likelihood of
`prevailing on its anticipation challenges to claims 14 and 15, but not on its
`challenges to claims 1–13 because Petitioner’s analysis did not account
`properly for all the limitations of independent claims 1 and 5. Paper 8, 2.
`Therefore, we instituted review of claims 14 and 15 and declined to review
`claims 1–13. Id. On April 24, 2018, the Supreme Court held that a decision
`to institute under 35 U.S.C. § 314 may not institute on less than all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
`*10 (U.S. Apr. 24, 2018). In light of SAS Inst., Inc., we modify our Decision
`on Institution to institute review of claims 1–15 as anticipated by Bonte.
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedule. After conferring, if the parties wish to change the
`schedule or submit further briefing, the parties must request a conference
`call with the panel to seek authorization for such changes or briefing. A
`request for additional briefing must provide good cause for any proposed
`briefing, which should be limited in size and scope.
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision is modified to include review
`of claims 1–15 as anticipated by Bonte; and
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or any further
`briefing, and, if so, shall request a conference call with the panel to seek
`
`2
`
`

`

`IPR2017-01328
`Patent 6,845,019 B2
`
`authorization for such changes or briefing within one week of the date of this
`Order.
`PETITIONER:
`Neil Warren
`John Phillips
`FISH & RICHARDSON PC
`IPR10256-0041IP1@fr.com
`PTABInbound@fr.com
`
`
`PATENT OWNER:
`Roger Fulghum
`Brian W. Oaks
`Brett J. Thompsen
`Nick Schuneman
`Jennifer Nall
`BAKER BOTTS LLP
`roger.fulghum@bakerbotts.com
`brian.oaks@bakerbotts.com
`brett.thompsen@bakerbotts.com
`nick.schuneman@bakerbotts.com
`jennifer.nall@bakerbotts.com
`
`3
`
`